Interference No. 103,625
1. Did the APJ abuse her discretion when she dismissed the remaining
Wallach and LeMaire motions and
2. The Wallach motion 1a for judgment. Are LeMaire claims 1-3
unpatentable over Engelmann et al. under 35 U.S.C. §§ 102 and 103 or did LeMaire
establish that their earlier filed German applications satisfy 35 U.S.C. § 112, description
requirement for the full scope of their claims 1-3 and thus effectively remove the
Engelmann reference as prior art.5
In addition, Wallach filed a motion to suppress portions of the LeMaire brief
(Paper No. 96) The motion stands opposed. (Paper No. 100)
I.
Preliminarily, we note that LeMaire attached to their brief, and cited therein,
6
two references, that were not submitted in compliance with the rules. Evidence which is
attached to a brief violates 37 C.F.R. § 1.682 and will not be given consideration at final
LeMaire clouds this issue by identifying one of the issues before the board as5
“whether the LeMaire patent and German priority applications, ‘072 and ‘089, contain an
enabling disclosure under 35 U.S.C. § 112, first paragraph (See LeMaire’s brief, page 5,
statement 1). On the contrary, as clearly set forth by the APJ in Paper Nos. 80 and 86, the
issue is whether the earlier filed applications satisfy the 35 U.S.C. § 112, description
requirement. Description and enablement are separate requirements of 35 U.S.C. § 112,
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991) and Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988).
The Merck Manual, Merck Sharp & Dohme Research Laboratories 15th ed.6
1987, Chap. 2, pp. 8-9; and “A Urine Inhibitor of Interleukin 1 Activity Affects Both
Interleukin 1" and 1$ But Not Tumor Necrosis Factor ". The Journal of Immunology, Vol
139, No. 5 Sept. 1987 pp. 1541-1545.
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